Excerpt:.....mohan de, 1995 (2) gau lt 218 (db) and union of india v smt gita banik, 1996 (2) glt 246, are not good law]. - it purports to make a distinction between actions for injunction and for damages by a proprietor of an unregistered trade mark and his right to complain against and prevent passing-off by another person of his goods as the goods of the proprietor of the unregistered trade mark......revision is whether the court of the second munsif has jurisdiction to try the suit. section 73 of trade marks act 1940 (hereinafter referred to as old act) ran thus--no suit for the injunction of a trade mark or otherwise relating to any right in a trade mark shall be instituted in any court inferior to a district court having jurisdiction to try the suit.the old act was repealed by the trade and merchandise marks act, 1958 (hereinafter referred to as the new act). section 105 of the new act runs thus-'no suit- (a) for the infringement of a registered trade mark; or(b) relating to any right in a registered trade mark; or(c) for passing off arising out of the use by the defendant of any trade mark which is identical with or descriptively similar to the plaintiff's trade mark whether.....

Judgment:ORDER

G.K. Misra, J.

1. Petitioners and opposite party No. 3 are the plaintiffs. Plaintiff No. 1 claims to be the proprietor of the Orissa Kohinoor Press and is publishing two almanacs known as Asali Pathanisamanta Nutan Panjika and Orissa Kohinoor Press Panjika The case of the plaintiffs is that these almanacs are printed and published on the basis of calculations furnished by Ganaks on annual basis and that the almanacs sell mainly upon the goodwill and the name of the calculator. Harihar Khadiratna (petitioner No. 2) and Dayanidhi Khadiratna (opposite party No. 21 had been jointly furnishing such calculations to plaintiff No. 1. In 1964 a dispute arose between them and the calculations for this year 1965-66 for the two almanacs of plaintiff No. 1 were supplied by petitioner No. 2 alone. The defendants (opposite parties 1 and 2) published two Panjikas adopting the names as Asali Samanata Panjika and Orissa Jatiya Panjika Ba Orissa Kohinoor Panjika. It was further averred by the plaintiffs that the defendants adopted these names so that their almanacs would pass off for the almanacs of plaintiff No. 1. On the aforesaid averments plaintiffs filed Title suit No. 21 of 1965 in the Court of the Second Munsif, Cuttack, asking for the relief of permanent injunction restraining the defendants from selling, publishing or otherwise dealing with their almanacs amongst other reliefs They further asked for an interim injunction.

Defendants contested the suit alleging that there was no passing off and that an action for passing-off was outside the jurisdiction of ordinary Civil Courts and would exclusively lie in the Court of the District Judge.

The learned trial Court granted an interim injunction. In appeal it was vacated on a finding that the Munsif had no jurisdiction to try the suit. Against this order, the civil revision has been filed.

2. The only question for determination in this revision is whether the Court of the second Munsif has jurisdiction to try the suit. Section 73 of Trade Marks Act 1940 (hereinafter referred to as Old Act) ran thus--

No suit for the injunction of a trade mark or otherwise relating to any right in a trade mark shall be instituted In any Court inferior to a District Court having jurisdiction to try the suit.

(c) for passing off arising out of the use by the defendant of any trade mark which is identical with or descriptively similar to the plaintiff's trade mark whether registered or unregistered

shall be instituted in any Court inferior to a District Court having jurisdiction to try the suit'

3. Whatever might be position under the old Act, it is very clear from Section 105(c) of the New Act that a suit for passing-off arising out of the use by the defendant of any trade mark which is identical with or descriptively similar to the plaintiff's trade mark, whether registered or unregistered can be instituted only in the Court of the District Judge having jurisdiction to try the suit.

It is not necessary to decide in this revision whether in fact there was passing-off by the defendants of the plaintiff's almanacs. Even accepting the plaintiff's case that there was passing-off, the suit is maintainable only in the Court of the District Judge.

4. Mr. Misra, placed reliance on Section 27 of the New Act in support of a contention that passing-off action is a common law right and is not affected by the provisions of this Act. Section 27 runs thus--

27. (1) No person shall be entitled to institute any proceedings to prevent, or to recover damages for, the infringement of an unregistered trade mark.

(2) Nothing in this Act shall be deemed to affect rights of action against any person for passing-off goods as the goods of another person or the remedies in respect thereof.

Section 27 does not at all deal with question of jurisdiction. It purports to make a distinction between actions for injunction and for damages by a proprietor of an unregistered trade mark and his right to complain against and prevent passing-off by another person of his goods as the goods of the proprietor of the unregistered trade mark. Sub-section (1) prohibits proceedings for injunction and for damages by the proprietor of an unregistered trade mark while Sub-section (2) makes it clear that the proprietor of an unregistered trade mark can maintain passing-off actions. There is a clear distinction between an action for passing-off and that for infringement. In the case of an infringement, plaintiff must establish his title to the exclusive use of the trade mark in question for goods of a specified kind. In the case of passing-off action, the nature of the complaint must be that the defendant is using means which are calculated to passing-off his goods of the plaintiff.

5. Section 27 does not impinge upon Section 105. They cover together different fields. Section 27 deals with substantive right while Section 105 relates to the question of jurisdiction.

Reliance was placed by Mr. Misra on AIR 1940 PC 55 Francis Day and Hunter v. T. C. F. Corporation Ltd. and AIR 19(53 SC 449, Amritdhara Pharmacy v. Satya Deo in support of the contention that ordinary Civil Courts have jurisdiction to try passing-off actions These two cases do not discuss the question of jurisdiction. The Supreme Court decision arose out of a proceeding for registration of a trade mark. None of these cases is relevant to the point in issue.

6. A passing-off action lies only in the Court of the District Judge. The suit before the second Munsif. Cuttak, is without jurisdiction. It is therefore unnecessary to discuss whether on merits a case for injunction has been made out.

7. In the result, the revision fails and is dismissed; but in the circumstances, there will be no order as to costs.